Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

---

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88142735 ORGANIC & BOTANIC (Stylized and/or with Design, see http://uspto.report/TM/88142735/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Please see argument in evidence section.

EVIDENCE
Evidence in the nature of Argument. has been attached.
Original PDF file:
evi_10818131175-20190723151748534819_._RESPONSE_TO_OFFICE_ACTION_ORGANIC___BOTANIC.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Facial, hair and body care preparations, namely, washes, lotions, creams, concealers, moisturizers, oils, serums, emulsions, masks, scrubs, cosmetics, cleansers, cleansing milks, beauty masks, powders, skin conditioners deodorants and dentifrices; lip repair and healing preparations; cosmetic eye care preparations; soaps; perfumery, essential oils, hair lotions; skin creams, powders, serums and liquids to enhance the skin; dentifrices; deodorants for personal use
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 017952698 filed 09/11/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Facial, hair and body care preparations, namely, washes, lotions, creams, concealers, moisturizers, oils, serums, emulsions, masks, scrubs, cosmetics, cleansers, cleansing milks, beauty masks, powders, skin conditioners deodorants and dentifrices; Non-medicated facial, hair and body care preparations, namely, washes, lotions, creams, concealers, moisturizers, oils, serums, emulsions, masks, scrubs, cosmetics, cleansers, cleansing milks, beauty masks, powders, skin conditioners, deodorants and dentifrices; lip repair and healing preparations; cosmetic eye care preparations; soaps, namely cleansing bars; soaps; perfumery, essential oils, hair lotions; skin creams, powders, serums and liquids to enhance the skin; dentifrices; deodorants for personal use; all the foregoing comprised in whole or significant part of organic ingredientsClass 003 for Non-medicated facial, hair and body care preparations, namely, washes, lotions, creams, concealers, moisturizers, oils, serums, emulsions, masks, scrubs, cosmetics, cleansers, cleansing milks, beauty masks, powders, skin conditioners, deodorants and dentifrices; cosmetic eye care preparations; soaps, namely cleansing bars; perfumery, essential oils, hair lotions; skin creams, powders, serums and liquids to enhance the skin; dentifrices; deodorants for personal use; all the foregoing comprised in whole or significant part of organic ingredients
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 017952698 filed 09/11/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the stylized wording "ORGANIC & BOTANIC" wherein the term "BOTANIC" appears on a shaded rectangle, and "ORGANIC" appears above "BOTANIC".

Supplemental Register
The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register'). NOTE: The applicant has separately filed an Allegation of Use, to change the basis of this application from Section 1(b), intent-to-use, to Section 1(a), use in commerce.


SIGNATURE(S)
Response Signature
Signature: /peter j. riebling/     Date: 07/23/2019
Signatory's Name: PETER J. RIEBLING
Signatory's Position: Attorney of Record, Member of District of Columbia Bar

Signatory's Phone Number: 2026312021

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88142735
Internet Transmission Date: Tue Jul 23 16:39:58 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201907231639582
82385-88142735-620287cf4798c148a89781c2d
4d182f603be38c276400b72d729473ed118f73-N
/A-N/A-20190723151748534819